After filing, the Office examines if the application contains all the essential elements:
- request for the grant of trademark – filled in Form PDF (Form MS Word) with the representation of the sign for which protection is sought;
- list of goods or services to which the sign refers;
- proof of the paid fee.
If the application contains all the essential elements, the Office shall enter data from the application into the Е- register of trademarks, which is updated every 24 h, with the assigning of the application number. Date of entry is at the same time the date of acquiring priority right on the sign from the application. If some of the elements from the application are missing, the applicant shall be invited to fill in the missing data in the application.
Certificate on the filled in application
From the moment of entry of the application into the E-register, the applicant may ask, with the payment of the appropriate fee, the issuing of the certificate from the Office that he has filed the application for the grant of trademark. The certificate shall be forwarded to applicant in the term of several days. The fee for the certificate is paid according to the tariff number 119 of the Law on the Republic Administrative Fees.
Formal examination of the application
Formal correctness refers to the examination of correctness of the request and the annexes attached to it, namely if it has: the adequate sign attached, the adequate colors listed, the goods/services adequately classified, etc.? If there are deficiencies, the Office shall invite the applicant in the result of the examination to correct them in the prescribed time limit. If the applicant, in the prescribed time limit, does not correct the application, as the Office has suggested, the application shall be rejected. If the applicant, in the prescribed time limit, corrects the application in a manner suggested by the Office, the Office shall proceed to the substantive examination of the application.
Substantive examination of the application
Substantive examination implies examination if conditions have been fulfilled for the protection of sign by a trademark and then if there are reasons to reject protection, prescribed by the Articles 4 – 7 of the Trademark Law.
In the course of the substantive examination of the application for the grant of trademark, the Office shall apart from the eligibility for protection examine also similarity of sign with the signs from the earlier trademark applications and registered trademarks.
Result of examination
If the Office establishes that the sign for some reason does not fulfill conditions for the protection by trademark, information of those reasons shall be sent to applicant, in writing by a Result of examination, leaving him a reasonable time limit for answer. After the receipt of the Result of examination, the applicant shall send his opinion in due time limit. If applicant is not in a position to answer in the due time limit, it is necessary to ask for the extension of time limit with the payment of the appropriate fee.
Answer to the result of examination
In the answer to the result of examination, the applicant should state the reasons why he does not agree with the arguments of the Office and why he considers that the sign may be registered. Depending on the reasons stated in the result of the examination, the applicant may remove obstacles according to the given instructions. For example, he can restrict the list of goods and services, remove the unimportant part of the sign, forward proof about the acquired distinctiveness of the sign, forward written approval from the competent body or letter of consent from the earlier right holder of a trademark.
If the applicant does not answer the Result of the Examination, or if he answers but the Office remains determined to keep the previously expressed opinion, the application shall be refused.
Letter of consent
Letter of consent is a written declaration of will of the previous trademark holder (trademark that is opposed to the application), in which he gives the consent for the protection of a particular sign. Letter of consent must be submitted in original and it should contain the following:
- Number of the previous trademark registration with the data about the trademark holder or the person giving the letter of consent;
- Number of the trademark application for which consent is given with the data about the person filing the request for the grant of trademark;
- Designation of goods or services for which consent is given;
- Declaration of consent for the registration of a particular sign;
• Signature of a previous holder of trademark/authorized person in the legal entity and date of giving the consent.
It is necessary to mention that the giving of consent of the holder of the earlier right does not automatically mean that the sign shall be eligible for registration. The Office shall place the given Letter of consent in the context of all other conditions for protection of a sign by a trademark and according to all the circumstances of a particular case it shall decide if there is probability of placing that sign in connection with some other, or probability of confusion.
If the letter is in a foreign language, it is necessary to forward the translation by the authorized court interpreter.
The holder of the earlier trademark has no obligation to give the consent.
Expert assistance with regard to this procedure can be obtained by engaging some of the representatives from the List of Representatives.
Publication in the Intellectual Property Gazette
If there are no reasons for the refusal of the application, the data from the application are published in the Intellectual Property Gazette which is issued twice a month (published data are: number of the application, filing date of the application, data about the applicant, image of the sign, list of goods or services that the sign refers to). From the publication date of the application, the term of three months begins to be calculated, and in the course of that time limit, the holder of the earlier right can file an opposition.
Registration of trademark
After the expiry of three months, if no opposition has been filed according to the article 7 of the Trademark Law, or if the opposition has been rejected or refused by a final decision, the Office shall invite the applicant to pay the prescribed fee for the registration of a trademark in a certain time limit and to furnish the proof on payment.
After the reception of the proof of payment of fee, the Office shall register the trademark and enter the trademark in the E- Register of the IPO and issue to the applicant the certificate on trademark that has the character of a decision in the administrative procedure. If the applicant does not furnish proof on the paid fee in the prescribed time limit, the Office shall suspend the procedure.
Decision on refusal
If the applicant does not act according to the request of the Office stipulated in the Result of Examination, or if he acts in compliance with the request but the Office still considers that the trademark as a whole and for particular goods and services can not be registered, it shall refuse the application in total or in part by a decision.
Against the decision of the Office (final decision terminating the procedure) administrative suit may be initiated by filing legal suit to the Administrative Court in the term of 30 days from the date of the receipt of the decision.
Against the decisions of the Office, passed by the implementation of the Trademark Law (“Official Gazette RS”, no 6/20), appeal can not be filed but administrative suit can be initiated by filing suit at the Administrative Court.
How long does the procedure last?
If the Office does not find the fact that makes it necessary to write the Result of the Examination, or if there is no other obstacle for the registration, usually six months passes till the date of the registration. If the application is not formally correct, there are reasons for possible refusal of protection or if there is termination of the procedure due to previous issues, the procedure may last longer than 6 months.